Fire, Ice, and Trademark Protection

With HBO’s hit adaptation of George R.R. Martin’s A Song of Fire and Ice drawing to a close, Game of Thrones has a trademark portfolio and enforcement budget to match its cultural status.

Trademark Portfolio

We’ll just look at HBO’s US portfolio, headed by in-house counsel Judy McCool. At the time of writing, HBO has just over four hundred and fifty active applications and registrations in its entire portfolio, and more than seventy relate to Game of Thrones – about 15% of HBO’s entire US portfolio.

The title Game of Thrones or variations account for just over half of the total filings, and cover everything from DVDs to spinoff games to slot machines, clothing, action figures, watches, food and booze, and even swords. The rest of the filings are scattered between character-specific marks like KHALEESHI for makeup and HODOR for clothing to plot-driven marks like THE LONG NIGHT and WINTER is coming. There are also a handful of more random filings like HAND OF THE QUEEN for alcoholic beverages and clearly the strangest, MILK OF THE POPPY for clothing and mugs (!).

Enforcement Efforts at the TTAB

HBO’s Trademark Trial and Appeal Board enforcement team, led by Tamara Carmichael of Olshan, also has its hands full. It has taken extensions of time to oppose or opposed dozens of applications by third parties, most related to the Game of Thrones title itself.

  • 7 ongoing extensions
  • 15 withdrawn applications
  • 10 defaults after opposition (most were unrepresented foreign applicants)
  • 1 registration cancelled
  • 2 amended applications
  • 2 did not oppose

Three of HBO’s applications were also opposed or subject to extensions; filings for GAME OF THRONES went through to registration, while HBO dropped applications for DROGON and THREE EYED RAVEN for alcoholic beverages.

Yr Mark Ser. No. or
TTAB No.
Company Outcome
2019 H & HODOR 87622127 Shang Hai Fei Win Wu Liu You Xian Gong Si New extension
2019 DINNER IS COMING 88020149 Mohammad Said New extension
2019 GAME OF CONES 88101606 Beauty Bakerie Cosmetics
Brand, Inc.
New extension
2019 QUEEN OF THRONES 91246195 Sanas Health Practice Ltd. Amended to Queen of the Thrones
2019 PETER COUTURE 88027937 Peter Couture New extension
2019 GAME OF PWNS 88149316 and 88149338 Daniel Alotta New extension
2018 GAME OF KINGS 91244837 IGG Singapore Pte. Ltd. Consented extensions
2018 KALESIAH 87957584 Kaleesiah LLC Second extension
2018 KELISI 88086223 QKZ Design Did not oppose
2018 GAME OF THORNS 91244050 The Trustees of the Rancho Santa Ana Botanic Garden. Withdrawal of applications
2018 DRACARYS 92069511 Hangzhou Wanray Imp. &Exp. Co. Ltd. Registration cancelled
2018 HOLDOOR 87783126 Foshan Handu Technology Co., Ltd. Did not oppose
2018 DRACARYS 91242953 Ultra Pro International, LLC Suspended
2018 WINTER IS COMING 91242291 Purple Wine Company Default
2018 CON OF THRONES 91241541 Mischief Management, LLC Withdrawal of application
2018 NIGHTKING 91240578 Yiwu Chuangyue E-commerce Co., Ltd. Default
2018 GAME OF ROOMS 91240453 Andrew Ma Amended to A Game of Rooms
2018 SLOT OF THRONES 91240418 Huuuge Global Limited Default
2018 GAME OF SEASONS 91239948 Nikki Wooldridge dba Game of Seasons Withdrawal of application
2018 NIGHTKING   91239295 Shenzhen Dakang Shengshi Technology Co., Ltd. Default
2018 GAME OF STEAM   87578468 and 87578871 SmartCreo, Inc. Registered
2017 GAME OF DRONES 87287627 Scott Billups Withdrawal of application
2017 PURGE OF THRONES 91234829 Conglomerate Media LLC Withdrawal of application
2017 GAME OF HOMES 91233917 Kevin Kemble Default
2017 GAME OF TONES 91232701 Rare Earth Dynamics, Inc. Default
2016 GAME OF STONERS 91230051 Game of Stoners dba Paper Street Capital LLC Default
2016 GAME OF CLONES   86936627 David Persing Withdrawal of application
2016 GAME OF DRONES   91228977 Kismet Media Group Default
2016 GAME OF CRAYONS   86875064 Scott Severance Registered
2016 GAME OF POND   86849459 Steven Crosby, Jr. Withdrawal of application
2016 GAME OF MONARCHS   91227362 B&B Biz Corp. Opposition withdrawn; no SOU filed
2016 GAME OF TROLLS   91227002 Dreamworks Animation L.L.C. Default
2016 GAMETHRONE   91226315 Steiger Dynamics LLC Withdrawal of application
2016 GAME OF PHONES 86691920 Game of Phones, LLC Withdrawal of application
2015 LEAGUE OF THRONES 91223921 Zachary Capp and Jonathan Goldsmith Withdrawal of application
2015 GAME OF STONES 86594692 Andrew Howarth Withdrawal of application
2015 GAME OF WAR 86521836 Machine Zone, Inc. Registered
2015 GAME OF DRONES 91222199 Ballistic UAV, Inc. Withdrawal of application
2015 THREE-EYED RAVEN 91221878 Opposed by Franciscan Vineyards, Inc. (vs. HBO) Withdrawal of application by HBO
2015 GAME OF THRONES 86500697 and 86309080 Extensions by Fantasy Flight Publishing, Inc. (vs. HBO) Registered by HBO
2015 GAME OF HOMES 86287086 Scripps Networks, LLC Withdrawal of application
2015 ERA OF THRONES 86345522 Ravcorp Limited Withdrawal of application
2014 GAME OF ARMS   86253454 AMC Film Holdings LLC Withdrawal of application
2014 CLASH OF THRONES   91215210 337 Technology Limited Default
2013 DROGON 85936732 Desnoes & Deddes Limited (vs. HBO) Withdrawal of application by HBO
2012      
2011      

Finding the Right Ingredient – Finding Model 2(e)(1) Refusal Responses

You represent a client with a successful new Spanish-style restaurant chain, called “Saffron.” You helped file a trademark application for the mark for restaurant services, and the Examining Attorney issued a 2(e)(1) refusal, noting that saffron is an ingredient in some of the dishes served at the restaurant and concluding that it is thus merely descriptive of the restaurant services. How do you push back?

One great way is to look at the responses of other applicants who dealt with very similar objections, and successfully overcame them. Go to “Search” and then the “Office Action” tab. We’re looking for active registrations in Class 43 on the Principal Register that faced a 2(e)(1) refusal where the Examiner focused on the “ingredient” issue. Your search will look something like the strategy below:

The search yields over 600 relevant documents; on the first page of results alone, we have registrations like RED CHERRY, YUZU SUSHI, LA TAGLIATELLA, PICKLED LEMON, RED MANGO, MARGARITA COMPANY, and more; the second page yields more great examples like AOILI (stylized), BLACK GARLIC, FILINI, BONE & BROTH, and more.

We searched for outgoing Office Actions to hone in on the Examiner’s concerns, but finding relevant responses is simply. Click “Documents” to get a full list of TSDR history, and just click into the next Office Action Response to see how the applicant addressed the issue.

If you find a good example you like, click the magnifying glass and select the “Text” option – you can copy and paste plain text from this document to get your own arguments started.

The next time you face an Office Action with a unique fact pattern, make sure to use TM TKO to kick start your research to find and build on proven successful responses!

Search Reports Now Include Citation Data

TM TKO has now incorporated visual indicators of citations in knockout search and manual search results. There is a gray circle for any citations “inbound” during prosecution, and there is a red circle for any “outbound” citations against other applications. You can click on either circle to see full details on the cited marks, to hop into their file histories, and more. This data is also available via the magnifying glass.

Visibility into cited records adds considerable depth to the search report. Knowing how frequently the USPTO is citing this application as a bar to other applications helps you more accurately judge the risk that filing might pose to your client’s mark, and secure better outcomes for your client with less research time.

Office Action Analysis feature update – GS tooltips

TM TKO has added a bit of additional visibility into filing details in the Office Action Analysis tools’ list of Similar Acceptances (acceptances for similar marks facing the same issue) and Examiner Acceptances (recent acceptances from your Examiner for filings facing the same issue). Now, when you mouse over a class, you’ll see additional details on the goods or services for that application. Keep on the lookout for more updates!

How the Office Action Analysis Tool Helps – An Example

This blog posts looks at TM TKO’s new Office Action Analysis tool in more detail, demonstrating how it can help you build a find key prosecution data and build a strong response more quickly than ever before.

We’ll look at a recent final Office Action issued on March 22, 2019 for the mark KARMA ICE CREAM, Ser. No. 88/249,249. The application, filed by two individuals, covers a variety of frozen confections in Class 30. It raised two issues – 2(d) citations or potential citations to four prior filings, and requested a disclaimer of “ice cream.”

TM TKO Automates Research on the 2(d) Issue

Four prior registrations or applications were cited as bars: KARMA, registered in Class 30 and 42 (Reg. No. 5431756), GOOD KARMA (published in Class 30, Ser. No. 86651506) and SWEET KARMA (published in Classes 30 and 5, Ser. No. 87890908), and KARMA KOOKIES (pending in Classes 30 and 16, Ser. No. 88188680).

These citations are all listed in the “Citations” section of the report, just after the main application details. Each has a small triangle that can be expanded to show the full web of prosecution citations.

KARMA registration – cited against 4 applications, 1 published (SWEET KARMA) and 2 pending (including KARMA KOOKIES)

GOOD KARMA published app – overcame citations to two GOOD KARMAL registrations in prosecution; cited versus published SWEET KARMA and pending KARMA KOOKIES application plus an abandoned GOOD 420 KARMA application in Class 1.

SWEET KARMA – about to be registered, no citations in prosecution and only cited against KARMA KOOKIES and this application.

KARMA KOOKIES – the KARMA registration plus a whole slew of applications with KARMA; no response has been filed yet.

The Examining Attorney statistics suggest that the Examining Attorney of this application upholds initial refusals at a rate roughly consistent with the rate of the Office overall. (If the applicant was represented, you’d see attorney success rates too.)

The “Similar Acceptances” section points to helpful Office Actions overcoming comparable refusals, like two registrations for KARMA in Class 29 for differing goods with different owners, for GOOD KARMA CRUNCH in Class 30, for FRUITE KARMA in Class 29, for GOOD KARMA CAFÉ in Class 43, for KARMA KOLSCH and KARMA KOMBUCHA in Class 32 with different owners, and more. The applicants overcame 2(d) refusals based on the term KARMA with a variety of arguments and consent strategies, helping you quickly build persuasive responses on similar facts.

Just click on the magnifying glass, then “Documents,” and either click on the Office Action or response you want to see in PDF format, or click the magnifying glass again to get to a plain-text version.

Below this, the “Examiner Acceptances” section will point you to recent acceptances after 2(d) refusals for this Examining Attorney, which can provide additional insight into the types of arguments that the Examining Attorney may find especially helpful.

ICE CREAM Disclaimer Request

There isn’t a service out there that can help you from having to enter a disclaimer of “ice cream” where “ice cream” is generic for the goods, but TM TKO does help as best it can. The “Disclaimer” section is organized by term.

Clicking on KREME shows you three examples of applicants getting marks that contain KREME or close variants through on the Principal Register without a disclaimer after facing a disclaimer request, all in related classes.

This lets you rapidly view the best-case outcomes, and decide whether to pursue similar arguments. You can click on the magnifying glass and dig into the file histories of each. The registrations for NORTH FOREST KREME and KETO/// KREME, for example, both disclaim exclusive rights in “cream,” suggesting that the Examiner’s approach here is likely to hold up.

As above, clicking in on the magnifying glass to find additional details and do deep dives in file histories to learn more.

We hope the automated research provided by TM TKO’s Office Action Analysis tool is a huge boon to your practice, helping you do better legal research and drafting faster than ever before. Start playing with the Office Action Analysis tool now, and you have any questions, don’t hesitate to contact us at support@tmtko.com.

Not using TM TKO yet? Sign up here.

Using Watch with Office Action Analytics

It’s simply to access Office Action Analytics for your portfolio via TM TKO’s Watch tools. Go to the “Watch” page, select “New Watch,” then select “Office Action” – or just click here.

Under “Trademark Criteria,” add some constraints to limit results to just Office Actions that you care about. You have a few options. If your email address is used in the correspondence field, that’s the simplest way to set it up.

Or, you can pair up your firm name (use “phrase” if you have a common term) and your last name. You can use a firm email extension or docketing email address plus your last name, too.

However you have yourself identified in the “Trademark Criteria,” make sure to go down to “Office Action Criteria. Select “Direction” and limit to “Outgoing” correspondence from the USPTO.

If you get an Office Action, you’ll get an email report with a link into the system. It’s just a click from there to access the file history or get to the full analytics report, as shown below.

The Office Action analytics report will give you Examiner data and selected successful responses, targeted to your facts, prevailing on similar arguments. TM TKO is the only place to find this kind of trademark research, and it’s so easy that you can’t help but do your best work.

We hope you enjoy the new tools. If you have any questions, don’t hesitate to email us at support@tmtko.com.

If you are not a subscriber yet, you can try for free for 30 days at https://www.tmtko.com/signup. TM TKO is very cost-efficient: a 24 hour day pass is $75. Subscriptions start at $250 per month or $2500 per year for one seat, and include unlimited use of all search, research, and watch tools.

TM TKO launches new Office Action Analytics and Search Upgrades

TM TKO’s new Office Action analytics let you prepare smarter, better Office Action responses in less time. Our tools do the complex research for you, instantaneously. See a full example of the kind of Office Action analytics that TM TKO provides, or try it now from your Tools menu.

Issue-driven analysis: instantly provides you successful responses for similar marks for similar products or services to help you build on the successes of others. Pull any TSDR document in formatted PDF or plain-text format.

Examiner details: compare your Examining Attorney’s allowance rates on this issue with others in that Law Office and at the USPTO overall, and see recent successful responses for your issue and your Examiner.

Citation histories: do deep dives into citation histories at a click. It’s easy to understand complex webs of co-existence, assess your own chances of success, and see how the cited prior filings have interacted with other applications.

ThorCheck

Office Action analysis integrates with ThorCheck, TM TKO’s ground-breaking comparative research tool based on a precedential TTAB opinion, to find examples of co-existence of the same mark for two sets of goods with different owners. This evidence helps you push back against likelihood of confusion claims. You can also use ThorCheck to provide confusion evidence as the senior party in a Letter of Protest or opposition.

Search Upgrades

Office Action and prosecution data is now integrated across our platform.

Results in knockout search, manual search, and watch results all feature easily accessible citation data, full TSDR file histories with Office Actions and Responses tagged by issue, and quick links to prosecution analysis. Just click on the magnifying glass icon for a wealth of research options.